OJ EPO SE 4/2015, p0 - CONTENTS | XEPC: EPC and PCT resource

FOREWORD by the Vice- President	1

PART I	2
BOARDS OF APPEAL ACTIVITIES IN 2014	2
1. Introduction	2
2. Statistics	2
2.1 General statistics	2
2.2 Situation of the boards of appeal in the last five years	7
3. More about the boards' activities	7
3.1 Proceedings before the Enlarged Board of Appeal	7
3.1.1 Referrals to the Enlarged Board of Appeal under Article 112 EPC	7
3.1.2 Petitions for review under Article 112a EPC	9
3.2 Outcome of proceedings before the technical boards of appeal	11
3.3 Proceedings before the Disciplinary Board of Appeal	15
3.4 Length of proceedings	15
3.5 Breakdown by language of the proceedings	16
4. Contacts with national courts, applicants and representatives	16
5. Number of staff and distribution of responsibilities	17
6. Information on recent board of appeal case law	18
PART II	19
BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2014	19

I. PATENTABILITY	19
A. Exceptions to patentability	19
1. Breaches of "ordre public" or morality	19
2. Embryonic stem cells	20
3. Essentially biological processes	21
4. Therapeutic methods	25

B. Novelty	26
1. Information retrieved from the internet: proof of the date of availability	26
2. Content of prior art – taking drawings into account	29
3. Ascertaining differences – functional features	30
4. Second medical use	31
4.1 Reproducibility of the content of the disclosure	31
4.2 Purpose-limited product claims and Swiss-type claims	32

C. Inventive step	34
1. Problem and solution approach	34
2. Closest prior art	34
2.1 Similarity of the technical problem	36
2.2 Speculative character of closest prior art	37
3. Technical problem	37
3.1 Formulation of the technical problem	38
4. Skilled person	39
4.1 Identification of the skilled person in the case of computer-implemented inventions	39
4.2 Neighbouring field	40
5. Assessment of inventive step	41
5.1 Treatment of technical and non-technical features	41
5.2 Problem inventions	42
5.3 Examples of the denial of inventive step	42

D. Industrial application	44

II. PATENT APPLICATION AND AMENDMENTS	45
A. Claims	45
1. Restrictions on generalising the technical information and examples adduced in the description	45

B. Unity of invention	46
1. Unsearched subject-matter – subject-matter searched in divisional application	46

C. Sufficiency of disclosure	47
1. Knowledge of skilled person relevant for assessing sufficiency of disclosure	47
1.1 The disclosure is aimed at the skilled person	47
1.2 References may also enable a skilled person to carry out an invention	48
2. Clarity and completeness of disclosure	48
2.1 Parameters	48
3. Reproducibility	49
3.1 Reproducibility without undue burden	49
3.1.1 Chemical compounds	49
4. The requirement of sufficiency of disclosure in the biotechnology field	51
4.1 Clarity and completeness of disclosure	51
4.1.1 Repeatability	51
4.2 Level of disclosure required for medical use	51
5. The relationship between Article 83 and Article 84 EPC	52
5.1 Article 83 EPC and clarity of claims	52

D. Priority	53
1. First application	53
1.1 Identity of applicant	53
2. Partial priority	54

E. Amendments	56
1. Article 123(2) EPC – added subject-matter	56
1.1 Implicit disclosure	56
1.2 Intermediate generalisation – non-disclosed combinations	57
1.3 Disclaimer	58
1.4 Addition of limiting feature without technical contribution – legal fiction of compliance with Article 123(2) EPC – G 1/93	60
2. Article 123(3) EPC	61
2.1 Interpretation of scope of protection	61
3. Relationship between Article 123(2) EPC and Article 123(3) EPC, and interpretation under Article 69 EPC	61

F. Divisional applications	62
1. Added subject-matter	62
1.1 Omission of feature	62
1.2 Isolation of one species	64
1.3 Arbitrary selection of upper and lower limits – jurisprudence on "ranges" not applicable	64
1.4 Selection from lists	65
2. Final decision on subject-matter in the parent application – res judicata	66
3. Double patenting	68
3.1 Swiss-type claim and claim under Article 54(5) EPC	68
3.2 Product, use, and method claims – not the same subject-matter	70
3.3 Overlap of scope of protection – internal priority	70

III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO	72
A. Legitimate expectations	72

B. Right to be heard	73
1. Non-attendance at oral proceedings	73

C. Oral proceedings	74
1. Continuation of oral proceedings on the next day	74
2. Location of oral proceedings	75
3. Handwritten amendments during oral proceedings before the board	76

D. Re-establishment of rights	77
1. Error in making payment	77
2. Isolated mistake by representative not excusable	78
3. Representative's secondary responsibility	78
4. Request for re-establishment of rights redundant – statement of grounds minimally late-filed	79
5. Reimbursement of fee for re-establishment	80

E. Law of evidence	81
1. Witness testimonies and expert opinions	81
2. Evaluation of evidence	84
3. Burden of proof	85

F. Suspected partiality	86
1. Suspected partiality of members of the opposition division – objections under Article 24(1) EPC	86
2. Suspected partiality of members of the boards of appeal – admissibility under Article 24(3), second sentence, EPC	87
3. Suspected partiality of members of the Enlarged Board of Appeal	88

G. Formal aspects of decisions of EPO departments	92
1. Composition of the competent departments of first instance	92
1.1 Examining division	92
2. Form of decisions	93
2.1 Reasons for the decision	93
2.1.1 Legal requirement for reasoned decisions under Rule 111(2) EPC	93
2.1.2 Examples of non-compliance with the requirements of Rule 111(2) EPC	93

H. Correction of errors in decisions – Rule 140 EPC	94

I. Stay of proceedings	95

J. Rules relating to Fees	97
1. Ten-day fail-safe arrangement – small amounts lacking	97

K. Representation	98
1. Oral submissions by an accompanying person	98

IV. PROCEEDINGS BEFORE THE EPO	101
A. Preliminary and formalities examination	101
1. Accordance of a date of filing	101
1.1 Requirements for according a date of filing	101
1.2 Corrections under Rule 139 EPC	102
1.2.1 No replacement of invention	102

B. Examination procedure	103
1. Amendments under Rule 137(3) EPC	103
2. Additional searches during examination	103
3. Amendments relating to unsearched subject-matter	104

C. Special features of opposition and appeal proceedings	106
1. Transfer of party status	106
1.1 Change of address	106
1.2 Opponent status	107
1.3 Evidence	108
2. Withdrawal of opposition	108
3. Apportionment of costs	109

D. Opposition procedure	112
1. Admissibility of opposition	112
1.1 General	112
1.2 Correction of opponent's name	113
2. Scope of examination in the case of amendments	115
3. Correction of error (in claim) in opposition	120
4. Late-filed facts and evidence in opposition proceedings	121
4.1 Opposition divisions' exercise of discretion	121
5. Fresh grounds for opposition	122

E. Appeal procedure	123
1. Filing and admissibility of the appeal	123
1.1 Appealable decisions	124
1.1.1 Decisions	124
1.2 Board competent to hear a case	125
1.3 Form and time limit of appeal	126
1.3.1 Form and content of notice of appeal (Rule 99(1) EPC)	126
1.4 Statement of grounds of appeal	129
1.4.1 Form of statement of grounds	129
1.4.2 General principles	130
1.4.3 New case raised by opponent (appellant)	133
2. Substantive examination of the appeal	134
2.1 Binding effect of requests – no reformatio in peius	134
2.1.1 Opponent as sole appellant	134
2.2 Patentability requirements under examination in ex parte proceedings	135
2.2.1 Ex parte proceedings	135
2.3 Facts under examination – applying Article 114 EPC in appeal proceedings	135
2.3.1 Boards to examine facts of own motion	135
3. Remittal to the department of first instance	136
3.1 General	136
3.2 Remittal following filing or late submission of relevant new document	136
3.2.1 Ex parte appeal proceedings	136
4. Late submission in appeal proceedings	137
4.1 Article 12(4) RPBA – submission of new arguments on appeal	137
4.2 Submission of new documents	138
4.2.1 Justified reaction to the opposition division's decision	138
4.2.2 Late submission of public prior use	139
5. Filing of amended claims in appeal proceedings	139
5.1 Amendments after arrangement of the oral proceedings	139
5.2 Article 12(4) RPBA – requests not examined at first instance	141
5.2.1 General principles	141
5.2.2 Request not submitted by proprietor in opposition proceedings	142
5.2.3 Resubmission of requests withdrawn at opposition stage	143
5.2.4 Amendments justified by the normal development of the proceedings	144
5.2.5 Consideration of amended claims – number of auxiliary requests	146
6. Reimbursement of appeal fees	146
6.1 Referral G 1/14	146
6.2 Reimbursement must be equitable	147
7. Proceedings before the Enlarged Board of Appeal	148
7.1 Referral under Article 112 EPC – admissibility	148
7.2 Petition for review under Article 112a EPC	149
7.2.1 Objection not complying with Rule 106 EPC	149
7.2.2 Fundamental violation of Article 113 EPC	150

V. PROCEEDINGS BEFORE THE DISCIPLINARY BOARD OF APPEAL	152
1. Appeals against decisions of the Examination Board	152
1.1 Objective review of the marks awarded	152

VI. INSTITUTIONAL MATTERS	154
1. Amendments to the Rules of Procedure of the Boards of Appeal – legislative power with the Administrative Council	154

ANNEXES
ANNEX 1	156
Decisions discussed in the Case Law Report for 2014	156

ANNEX 2	169
Cited decisions	169
Decisions and opinions of the Enlarged Board of Appeal on referrals	169
Decisions of the Enlarged Board of Appeal on petitions for review	170
Decisions of the Legal Board of Appeal	170
Decisions of the technical boards of appeal	171
Decisions of the Disciplinary Board of Appeal	176

ANNEX 3	177
Headnotes to published decisions (or to be published) delivered in 2014 and 2015; referring decisions can be found in Annex 4	177

ANNEX 4	180
Referrals to the Enlarged Board of Appeal	180

Source: http://www.epo.org/law-practice/legal-texts/official-journal/2015/etc/se4/p0.html

Date retrieved: 19 May 2021

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