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Headword & keywords

Headnote

G 2/10

Disclaimer/SCRIPPS

 

Admissibility of referral (yes) – Construction of referred question – term disclaimer – subject-matter instead of embodiment – G 1/03 and G 2/03 relating to disclaimers for disclosed subject-matter (no) – General definition for assessment under Article 123(2) EPC – applicable to disclaimers for disclosed subject-matter (yes) – Point of reference: subject-matter remaining claimed – Technical assessment of overall circumstances of the case required – same test as for positive features – Disclaimed subject-matter disclosed as part of the invention – not relevant – Importance of uniform concept of disclosure and uniform determination of rights derivable therefrom

The question referred to the Enlarged Board of Appeal is answered as follows:

 

1a. An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.

 

1b. Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subjectmatter remaining in the claim after the amendment.

G1/10 

Request to correct patent/FISHER-ROSEMOUNT

 

"Request under Rule 140 EPC to correct patent inadmissible"

The questions referred to the Enlarged Board of Appeal are answered as follows:

 

1. Since Rule 140 EPC is not available to correct the text of a patent, a patent proprietor's request for such a correction is inadmissible whenever made, including after the initiation of opposition proceedings.

 

2. In view of the answer to the first referred question, the second referred question requires no answer.

 

G 1/09

Pending application/SONY

 

"Pending application" – "Definition" – "Divisional application" – "Appeal period"

In the case where no appeal is filed, a European patent application which has been refused by a decision of the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal

 

G 4/08

Language of the proceedings / MERIAL 

"Language of the proceedings"

The Enlarged Board of Appeal, in response to the three points of law referred to it, concludes that:

 

Question 1: If an international patent application has been filed and published under the PCT in one official language of the EPO, it is not possible, on entry into the European phase, to file a translation of the application into one of the other two EPO official languages.

 

Question 2: In written proceedings on a European patent application or an international application in the regional phase, EPO departments cannot use an EPO official language other than the language of proceedings used for the application pursuant to Article 14(3) EPC.

 

Question 3: This question serves no purpose.

G 3/08

Programs for computers

 

[No keywords]

1. In exercising his or her right of referral a President of the EPO is entitled to make full use of the discretion granted by Article 112 (1) (b) EPC, even if his or her appreciation of the need for a referral has changed after a relatively short time.

 

2. Different decisions by a single Technical Board of Appeal in differing compositions may be the basis of an admissible referral by the President of the EPO of a point of law to the Enlarged Board of Appeal pursuant to Article 112 (1) (b) EPC.

 

3. As the wording of Article 112 (1) (b) EPC is not clear with respect to the meaning of “different/abweichende/ divergent” decisions the provision has to be interpreted in the light of its object and purpose according to Article 31 of the Vienna Convention on the Law of Treaties (VCLT). The purpose of the referral right under 112 (1) (b) EPC is to establish uniformity of law within the European patent system. Having regard to this purpose of the presidential right to refer legal questions to the Enlarged Board of Appeal the notion “different decisions” has to be understood restrictively in the sense of “conflicting decisions”.

 

4. The notion of legal development is an additional factor which must be carefully considered when interpreting the notion of “different decision” in Article 112 (1) (b) EPC. Development of the law is an essential aspect of its application, whatever method of interpretation is applied, and is therefore inherent in all judicial activity. Consequently, legal development as such cannot on its own form the basis for a referral, only because case law in new legal and/or technical fields does not always develop in linear fashion, and earlier approaches may be abandoned or modified.

 

5. Legal rulings are characterised not by their verdicts, but by their grounds. The Enlarged Board of Appeal may thustake obiter dicta into account in examining whether two decisions satisfy the requirements of Article 112 (1) (b) EPC.

 

6. T 424/03, Microsoft does deviate from a view expressed in T 1173/97, IBM, concerning whether a claim to a program on a computer-readable medium necessarily avoids exclusion from patentability under Article 52(2) EPC. However this is a legitimate development of the case law and there is no divergence which would make the referral of this point to the Enlarged Board of Appeal by the President admissible.

 

7. The Enlarged Board of Appeal cannot identify any other inconsistencies between the grounds of the decisions which the referral by the President alleges are divergent. The referral is therefore inadmissible under Article 112(1)(b) EPC.

G 3/08

[NO HEADWORD]

 

"Objection to a member of the EBA, suspicion of partiality"

[Interlocutory decision]

The composition of the Enlarged Board of Appeal in case G 3/08 remains unchanged.

G 2/08

Dosage regime / ABBOTT RESPIRATORY

 

Admissibility of referral (yes)  Applicable law  Rules of interpretation of the EPC as an international treaty  Respective domains of prohibition under Art. 53(c) EPC and permission under Art. 54(4) and (5) EPC)  Intention of the legislator  Notional novelty concept under Art. 54(4) and (5) EPC  Meaning of any "specific use" under Art. 54(5) EPC  Technical effect of a specific use  Abolition of so called Swiss-type claims  Time limit set for applicants to comply

                               ***

See also : OJ 10/2010, 514

 

The questions referred to the Enlarged Board of Appeal are answered as follows:

 

Question 1: Where it is already known to use a medicament to treat an illness, Article 54(5) EPC does not exclude that this medicament be patented for use in a different treatment by therapy of the same illness.

 

Question 2: Such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state of the art.

 

Question 3: Where the subject matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so called Swiss-type claim as instituted by decision G 5/83.

 

A time-limit of three months after publication of the present decision in the Official Journal of the European Patent Office is set in order that future applicants comply with this new situation.

G 1/08

 

See G 2/07

G 2/07

Broccoli/PLANT BIOSCIENCE

 

"Admissibility of referrals – yes" – "Applicable law" – "Article 33(1)(b) EPC and substantive patent law" – "Protection of 'legitimate' expectations" – "Rule 26(5) EPC and Article 2(2) Biotech Directive as exhaustive definitions – yes" – "'Crossing' and 'selection' natural phenomena by way of a legal fiction – no" "Legislative history of Article 2(2) Biotech Directive" – "Contradictory meaning of the provision" – "No guidance on the interpretation of the term 'essentially biological process for the production of plants' in Article 53(b) EPC" – "Meaning of that exclusion: production of plants vs. plant varieties – 'production' vs. 'Züchtung' and 'obtention' (not decided)" – "Interpretation of 'essentially biological'": "The Article 52(4) EPC 1973 analogy (no) – the computer-related inventions approach (no) – the T 320/87 approach – criteria linked to the state of the art (no)" – "The systematic context of Article 53(b) EPC – the legislative history of the SPC and the EPC 1973" – "Conclusions from legislative history": "Exclusion of processes based on sexual crossing of whole genomes and on subsequent selection of plants (yes)" – "Addition of technical step serving the performance of the process steps – not sufficient to escape exclusion" – "Inclusion within that process of a step by itself modifying the genome of the plant produced – process not excluded from patentability"

The questions of law referred to the Enlarged Board of Appeal are answered as follows:

 

1. A non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC.

 

2. Such a process does not escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants.

 

3. If, however, such a process contains within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC.

 

4. In the context of examining whether such a process is excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC, it is not relevant whether a step of a technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a known process, whether it does or could occur in nature or whether the essence of the invention lies in it.

G 1/07

Treatment by surgery/MEDI-PHYSICS

 

Applicable provisions - Art. 112(1) EPC 1973 - Art. 53(c) EPC"  Admissibility of the referral - yes  The Vienna Convention - principle of narrow interpretation of exclusions - no  One surgical step in a multi-step method - excluded from patentability - yes  Limited to surgery for a therapeutic purpose - no  Meaning of the wording of the exclusion - legal history - impact of jurisprudence and practice - ratio legis  Nature of interventions - involvement of a practitioner - no" "Medical skills and health risks - further criteria  Claim left to encompass a surgical step - no  Disclaimer under Article 53(c) EPC - yes - subject to remaining requirements of EPC  Omission - methods only concerning the internal operation of a device - yes - subject to remaining requirements of the EPC  Possible use of non-surgical method in a surgical method - irrelevant, if non-surgical method complete teaching in itself

The questions referred to the Enlarged Board of Appeal are answered as follows:

 

1. A claimed imaging method, in which, when carried out, maintaining the life and health of the subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability as a method for treatment of the humsn or animal body by surgery pursuant to Article 53(c) EPC.

 

2a. A claim which comprises a step encompassing an embodiment which is a "method for treatment of the human or animal body by surgery" within the meaning of Article 53(c) EPC cannot be left to encompass that embodiment.

 

2b. The exclusion from patentability under Article 53(c) EPC can be avoided by disclaiming the embodiment, it being understood that in order to be patentable the claim including the disclaimer must fulfil all the requirements of the EPC and, where applicable, the requirements for a disclaimer to be allowable as defined in decisions G 1/03 and G 2/03 of the Enlarged Board of Appeal.

 

2c. Whether or not the wording of the claim can be amended so as to omit the surgical step without offending against the EPC must be assessed on the basis of the overall circumstances of the individual case under consideration.

 

 3. A claimed imaging method is not to be considered as being a "treatment of the human or animal body by surgeryn within the meaning of Article 53(c) EPC merely because during a surgical intervention the data obtained by the use of the method immediately allow a surgeon to decide on the course of action to be taken during a surgical intervention.

G2/06

Use of embryos/WARF

 

"Admissibility of referral (yes)" – "Referral for preliminary ruling by European Court of justice (no) – request not admissible, as no power to make such referral under EPC" – "Rule 28(c) (formerly 23d(c)) EPC applicable to pending applications filed before it came into force (yes)" – "Rule 28(c) (formerly 23d(c)) EPC intra vires Article 53(a) EPC and in conformity with TRIPS Article 27 (yes)" – "Exception to patentability of Rule 28(c) (formerly 23d(c)) EPC applicable where claimed product could be prepared exclusively by method necessarily involving the destruction of embryos even if method is not explicitly part of claims (yes)" – "In assessing the exception to patentability of Rule 28(c) (formerly 23d(c)) EPC technical developments after date of filing not of relevance"

1. The request for a preliminary ruling by the European Court of Justice on the questions suggested is rejected as inadmissible.

 

2. The questions referred to the Enlarged Board of Appeal are answered as follows:

 

Question 1: Rule 28(c) EPC (formerly Rule 23d(c) EPC) applies to all pending applications, including those filed before the entry into force of the rule.   

 

Question 2: Rule 28(c) EPC (formerly Rule 23d(c) EPC) forbids the patenting of claims directed to products which - as described in the application - at the filing date could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which the said, products are derived, even if the said method is not part of the claims.

 

Question 3: No answer is required since Questions 1 and 2 have been answered with yes.

 

Question 4: In the context of the answer to question 2 it is not of relevance that after the filing date the same products could be obtained without having to recur to a method necessarily involving the destruction of human embryos.

G 1/06

Sequences of divisionals / SEIKO

 

"Invalidity as a result of non-compliance with Article 76(1) EPC on filing a divisional application – no" – "Amendment to conform with Article 76(1) EPC – allowable, even if at time of amendment earlier application no longer pending" – "Content of a member of a sequence of divisional applications must be disclosed in each of the preceding applications in the sequence as filed" – "Claims of a member of a sequence of divisional applications need not be directed to subject-matter within the scope of the claims of the preceding applications in the sequence as filed"

In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, it is a necessary and sufficient condition for a divisional application of that sequence to comply with Article 76(1), second sentence, EPC that anything disclosed in that divisional application be directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed.

G 1/05

Divisional/ASTROPOWER

 

"Invalidity as a result of non-compliance with Article 76(1) EPC on filing a divisional application - no" - "Amendment to conform with Article 76(1) EPC - allowable, even if at time of amendment earlier application no longer pending" - "Content of a member of a sequence of divisional applications must be disclosed in each of the preceding applications in the sequence as filed" - "Claims of a member of a sequence of divisional applications need not be directed to subject-matter within the scope of the claims of the preceding applications in the sequence as filed"

So far as Article 76(1) EPC is concerned, a divisional application which at its actual date of filing contains subject-matter extending beyond the content of the earlier application as filed can be amended later in order that its subject-matter no longer so extends, even at a time when the earlier application is no longer pending. Furthermore, the same limitations apply to these amendments as to amendments to any other (non-divisional) applications.

G 1/05

Exclusion and objection/XXX

 

"Notice of withdrawal under Article 24(2) EPC – requirements for replacement of a member of the Enlarged Board of Appeal – Suspicion of partiality against a member of the Enlarged Board of Appeal – merely based on participation of that member in a prior decision of a Board of Appeal having taken a position on the matter – suspicion not justified on an objective basis"

1. If a member of a Board of Appeal in a notice of withdrawal gives a ground which may by its nature constitute a possible ground for an objection of partiality that ground should normally be respected by the decision on replacement of the Board member concerned (Reasons, point 7).

 

2. As regards proceedings before the Enlarged Board of Appeal and unless there are specific circumstances throwing doubt on the Board member's ability to approach the parties' submissions with an open mind on a later occasion there cannot be any objectively justified, i.e. reasonable suspicion of partiality against a member of the Enlarged Board of Appeal within the meaning of Article 24(3), first sentence, EPC for the reason that a position on the matter was adopted in a prior decision of a Board of Appeal in which the Board member concerned had participated (Reasons, point 27).

G 3/04

Intervention/EOS 

 

"Intervention in appeal proceedings" – "Continuation of proceedings after withdrawal of sole appeal" – "Payment of appeal fee"

After withdrawal of the sole appeal, the proceedings may not be continued with a third party who intervened during the appeal proceedings.

G 2/04

Transfer of opposition/HOFFMANN-LA ROCHE

 

"Admissibility of the

referral (yes)" – "Transfer of

opponent status – free transfer (no) –

transfer to subsidiary in whose

interest the opposition was filed

(no)" – "Correction of the appellant

contrary to true intentions (no)" –

"Auxiliary request concerning the

person of the appellant in case of

legal uncertainty"

I. (a) The status as an opponent cannot be freely transferred.

(b) A legal person who was a subsidiary of the opponent when the opposition was filed and who carries on the business to which the opposed patent relates cannot acquire the status as opponent if all its shares are assigned to another company.

 

II. If, when filing an appeal, there is a justifiable legal uncertainty as to how the law is to be interpreted in

respect of the question of who the correct party to the proceedings is, it is legitimate that the appeal is filed in the name of the person whom the person acting considers, according to his interpretation, to be the correct party, and at the same time, as an auxiliary request, in the name of a different person who might, according to another possible interpretation, also be considered the correct party to the proceedings.

G 1/04

 

Diagnostic methods 

 

"Diagnostic methods under Article 52(4) EPC representing inventions excluded from patentability by means of a legal fiction" "Proper construction of the terms 'diagnostic methods' and 'practised on the human or animal body' referred to in Article 52(4) EPC - requirements of clarity and legal certainty - difficulty of defining medical and veterinary practitioners on a European level within the framework of the EPC - essential features of a diagnostic method excluded from patent protection under Article 52(4) EPC - qualification of an activity as having a diagnostic character - requirements for a diagnostic method to be regarded as being practised on the human or animal body"

1. In order that the subject-matter of a claim relating to a diagnostic method practised on the human or animal body falls under the prohibition of Article 52(4) EPC, the claim is to include the features relating to: 

(i) the diagnosis for curative purposes stricto sensu representing the deductive medical or veterinary decision phase as a purely intellectual exercise,

(ii) the preceding steps which are constitutive for making that diagnosis, and

(iii) the specific interactions with the human or animal body which occur when carrying those out among these preceding steps which are of a technical nature.

 

2. Whether or not a method is a diagnostic method within the meaning of Article 52(4) EPC may neither depend on the participation of a medical or veterinary practitioner, by being present or by bearing the responsibility, nor on the fact that all method steps can also, or only, be practised by medical or technical support staff, the patient himself or herself or an automated system. Moreover, no distinction is to be made in this context between essential method steps having diagnostic character and non-essential method steps lacking it.

 

3. In a diagnostic method under Article 52(4) EPC, the method steps of a technical nature belonging to the preceding steps which are constitutive for making the diagnosis for curative purposes stricto sensu must satisfy the criterion "practised on the human or animal body".

 

4. Article 52(4) EPC does not require a specific type and intensity of interaction with the human or animal body; a preceding step of a technical nature thus satisfies the criterion "practised on the human or animal body" if its performance implies any interaction with the human or animal body, necessitating the presence of the latter.

G 3/03

Reimbursement of the appeal fee/HIGHLAND

 

"Interlocutory revision and request for reimbursement of the

appeal fee - department of the first instance not competent to

refuse the request for reasons of equity - competence of the

board of appeal which would have been competent to decide on

the substantive issues of the appeal in the absence of

interlocutory revision"

1.In the event of interlocutory revision under Article 109(1) EPC, the department of the first instance whose decision has been appealed is not competent to refuse a request of the appellant for reimbursement of the appeal fee.

 

2.The board of appeal which would have been competent under Article 21 EPC to deal with the substantive issues of the appeal if no interlocutory revision had been granted is competent to decide on the request.

G 2/03

Disclaimer/GENETIC SYSTEMS

 

"Allowability of disclaimers - delimitation against state of

the art under Article 54(2) and (3)(4) - accidental

anticipation - exclusion of subject-matter not eligible for

patent protection"

"Drafting of disclaimers - requirements of clarity and

conciseness"

1. An amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed.

 

2. The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed:

 

2.1 A disclaimer may be allowable in order to:

- restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;

- restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention; and

- disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

 

2.2 A disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

 

2.3 A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC.

 

2.4 A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.

G 1/03

Disclaimer/PPG

 

"Allowability of disclaimers - delimitation against state of

the art under Article 54(2) and (3)(4) - accidental

anticipation - exclusion of subject-matter not eligible for

patent protection"

"Drafting of disclaimers - requirements of clarity and

conciseness"

1. An amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed.

 

2. The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed:

 

2.1 A disclaimer may be allowable in order to:

- restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;

- restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention; and

- disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

 

2.2 A disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

 

2.3 A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC.

 

2.4 A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.

G 3/02

Priorities from India/ASTRAZENECA

 

"International applications - priorities from India"

"Applicability of Article 87(5) EPC"

"The position under the PCT"

"The EPO not party to TRIPs"

"Interpretation of Article 87 EPC - according to principles of

public international law - in the light of obligations of

Contracting States under TRIPs"

The TRIPs Agreement does not entitle the applicant for a European patent application to claim priority from a first filing in a State which was not at the relevant dates a member of the Paris Convention but was a member of the WTO/TRIPs Agreement.

G 2/02

Priorities from India/ASTRAZENECA

 

"International applications - priorities from India"

"Applicability of Article 87(5) EPC"

"The position under the PCT"

"The EPO not party to TRIPs"

"Interpretation of Article 87 EPC - according to principles of

public international law - in the light of obligations of

Contracting States under TRIPs"

The TRIPs Agreement does not entitle the applicant for a European patent application to claim priority from a first filing in a State which was not at the relevant dates a member of the Paris Convention but was a member of the WTO/TRIPs Agreement.

G 1/02

Formalities officers' powers

 

"Opposition divisions - formalities officers - decisions - powers"

Points 4 and 6 of the Notice from the Vice-President Directorate-General 2 dated 28 April 1999 (OJ EPO 1999, 506) do not conflict with provisions of a higher level.

G 3/99

Admissibility of joint opposition or joint appeal/HOWARD

FLOREY

 

Admissibility - Fee for opposition - persons acting in common in filing notice of opposition - common opposition - joint opposition  Admissibility - Fee for appeal - persons acting in common in filing notice of appeal - common appeal - joint appeal  Common representative

1. An opposition filed in common by two or more persons, which otherwise meets the requirements of Article 99 EPC and Rules 1 and 55 EPC, is admissible on payment of only one opposition fee.

 

2. If the opposing party consists of a plurality of persons, an appeal must be filed by the common representative under Rule 100 EPC. Where the appeal is filed by a non-entitled person, the Board of Appeal shall consider it not to be duly signed and consequently invite the common representative to sign it within a given time limit. The non-entitled person who filed the appeal shall be informed of this invitation. If the previous common representative is no longer participating in the proceedings, a new common representative shall be determined pursuant to Rule 100 EPC.

 

3. In order to safeguard the rights of the patent proprietor and in the interests of procedural efficiency, it has to be clear throughout the procedure who belongs to the group of common opponents or common appellants. If either a common opponent or appellant (including the common representative) intends to withdraw from the proceedings, the EPO shall be notified accordingly by the common representative or by a new common representative determined under Rule 100(1) EPC in order for the withdrawal to take effect.

G 2/99

Six-month period/ DEWERT

 

”Admissibility of referral – significance of the point of law in the appeal proceedings (yes)” – ”Calculation of six-month period under Article 55 EPC – relevant date – date of actual filing of the application”

For the calculation of the six-month period referred to in Article 55(1) EPC, the relevant date is the date of the actual filing of the European patent application; the date of priority is not to be taken account of in calculating this period.

G 1/99

Reformatio in peius / 3M 

 

”Reformatio in peius – exception to the prohibition” – ”Status of appellant/opponent” – ”Status of appellant/patent proprietor”

In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected. However, an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the Opposition Division in its interlocutory decision.

 

In such circumstances, in order to overcome the deficiency, the patent proprietor/respondent may be allowed to file requests, as follows:

– in the first place, for an amendment introducing one or more originally disclosed features which limit the scope of the patent as maintained;

– if such a limitation is not possible, for an amendment introducing one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of Article 123(3) EPC;

– finally, if such amendments are not possible, for deletion of the inadmissible amendment, but within the limits of Article 123(3) EPC.

G 4/98

Designation fees 

 

”Failure to pay designation fees” – ”No retroactive effect of deemed withdrawal except for Article 67 EPC” – ”Deemed withdrawal takes effect upon expiry of the time limit for payment of designation fees”

I. Without prejudice to Article 67(4) EPC, the designation of a contracting state party to the EPC in a European patent application does not retroactively lose its legal effect and is not deemed never to have taken place if the relevant designation fee has not been paid within the applicable time limit.

 

II. The deemed withdrawal of the designation of a contracting state provided for in Article 91(4) EPC takes effect upon expiry of the time limits mentioned in Article 79(2), Rules 15(2), 25(2) and 107(1) EPC, as applicable, and not upon expiry of the period of grace provided by Rule 85a EPC.

G 3/98

Six-month period/ UNIVERSITY PATENTS 

 

”Admissibility of referral – significance of the point of law in the appeal proceedings (yes)” – ”Calculation of the six-month period under Article 55 EPC – relevant date – date of actual filing of the application”

For the calculation of the six-month period referred to in Article 55(1) EPC, the relevant date is the date of the actual filing of the European patent application; the date of priority is not to be taken account of in calculating this period.

G 2/98

Requirement for claiming priority of the ”same invention”

 

”Interpretation of the concept of ”the same invention” referred to in Article 87(1) EPC” – ”Consistency of the interpretation with the Paris Convention and the EPC” – ”Conformity of the interpretation with principles of equal treatment and legal certainty and with the requirement of consistency as regards assessment of novelty and inventive step”

The requirement for claiming priority of ”the same invention”, referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.

G 1/98

Transgenic plant/ NOVARTIS II

 

”Claims comprising but not identifying plant varieties” – ”Plant varieties as products of recombinant gene technology” – ”Article 64(2) EPC not relevant for examination of product claims”

I. A claim wherein specific plant varieties are not individually claimed is not excluded from patentability under Article 53(b) EPC even though it may embrace plant varieties.

II. When a claim to a process for the production of a plant variety is examined, Article 64(2) EPC is not to be taken into consideration.

III. The exception to patentability in Article 53(b), first half-sentence, EPC applies to plant varieties irrespective of the way in which they were produced. Therefore, plant varieties containing genes introduced into an ancestral plant by recombinant gene technology are excluded from patentability.

G 4/97

 

G 3/97

Opposition on behalf of a third party/GENENTECH  Opposition on behalf of a third party/INDUPACK 

 

“Admissibility of opposition - acting on behalf of a third party” - “Circumvention of the law by abuse of process”

1(a): An opposition is not inadmissible purely because the person named as opponent according to Rule 55(a) EPC is acting on behalf of a third party.

1(b): Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process.

1(c): Such a circumvention of the law arises, in particular, if:

- the opponent is acting on behalf of the patent proprietor;

- the opponent is acting on behalf of a client in the context of activities which, taken as a whole, are typically associated with professional representatives, without possessing the relevant qualifications required by Article 134 EPC.

1(d): However, a circumvention of the law by abuse of process does not arise purely because:

- a professional representative is acting in his own name on behalf of a client;

- a professional representative is acting in his own name on behalf of a client;

 

2: In determining whether the law has been circumvented by abuse of process, the principle of the free evaluation of evidence is to be applied. The burden of proof is to be borne by the person alleging that the opposition is inadmissible. The deciding body has to be satisfied on the basis of clear and convincing evidence that the law has been circumvented by abuse of process.

 

3: The admissibility of an opposition on grounds relating to the identity of an opponent may be challenged during the course of the appeal, even if no such challenge had been raised before the opposition division. 

 

Remarks: Cases G 3/97 and G 4/97 have been consolidated. The German translation of decision G 4/97 (language of the proceedings: English) corresponds to the text of decision G 3/97 (language of the proceedings: German) published in OJ 1999,245 ff); only the "Orders" of the two decisions differ.

G 2/97

Good faith/UNILEVER 

 

“Fee for appeal” - “Principle of good faith” - “Principle of the protection of legitimate expectations”

The principle of good faith does not impose any obligation on the boards of appeal to notify an appellant that an appeal fee is missing when the notice of appeal is filed so early that the appellant could react and pay the fee in time, if there is no indication - either in the notice of appeal or in any other document filed in relation to the appeal - from which it could be inferred that the appellant would, without such notification, inadvertently miss the time limit for payment of the appeal fee.

G 1/97

Request with a view to revision/ETA 

 

”Administrative or jurisdictional measures to be taken in response to requests based on the alleged violation of a fundamental procedural principle and aimed at the revision of a final decision taken by a board of appeal having the force of res judicata” – ”Entry in the Register of European Patents”

I. In the context of the European Patent Convention, the jurisdictional measure to be taken in response to requests based on the alleged violation of a fundamental procedural principle and aimed at the revision of a final decision of a board of appeal having the force of res judicata should be the refusal of the requests as inadmissible.

                                    

II. The decision on inadmissibility is to be issued by the board of appeal which took the decision forming the subject of the request for revision. The decision may be issued immediately and without further procedural formalities.

 

III. This jurisdictional measure applies only to requests directed against a decision of a board of appeal bearing a date after that of the present decision.

 

IV. If the Legal Division of the EPO is asked to decide on the entry in the Register of European Patents of a request directed against a decision of a board of appeal, it must refrain from ordering that the entry be made if the request, in whatever form, is based on the alleged violation of a fundamental procedural principle and aimed at the revision of a final decision of a board of appeal.

G 8/95

Correction of decision to grant/US GYPSUM II 

 

“Relative competence of the Technical and Legal Boards of Appeal” - “Refusal of a correction of the decision to grant”

An appeal from a decision of an Examining Division refusing a request under Rule 89 EPC for correction of the decision to grant is to be decided by a technical board of Appeal.

G 7/95

Fresh grounds for opposition/ETHICON 

 

“No power to examine fresh grounds for opposition without agreement of patentee”

In a case where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Articles 52(1) and 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step.

G 6/95

Interpretation of Rule 71a(1) EPC/GE CHEMICALS

 

Interpretation of Rule 71a(1) EPC vis-a-vis the boards of

Appeal

Rule 71a(1) EPC does not apply to the boards of appeal.

G 4/95

Representation/BOGASKY 

 

“Oral submissions by an accompanying person in opposition or opposition appeal proceedings”

1. During oral proceedings under Article 116 EPC in the context of opposition or opposition appeal proceedings, a person accompanying the professionalrepresentative of a party may be allowed to make oral submissions on specific legal or technical issues on behalf of that party, otherwise than under Article 117 EPC, in addition to the complete presentation of the party's case by the professional representative.

2. (a) Such oral submissions cannot be made as a matter of right, but only with the permission of and under the discretion of the EPO.

 

(b) The following main criteria should be considered by the EPO when exercising its discretion to allow the making of oral submissions by an accompanying person in opposition or opposition appeal proceedings:

(i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.

(ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions.

(iii) A request which is made shortly before or at the oral proceedings should in the absence of exceptional circumstances be refused, unless each opposing party agrees to the making of the oral submissions requested. (iv) The EPO should be satisfied that oral submissions by an accompanying person are made under the continuing responsibility and control of the professional representative.

 

(c) No special criteria apply to the making of oral submissions by qualified patent lawyers of countries which are not contracting states to the EPC.

G 3/95

Inadmissible referral 

 

“Patentability of plant and animal varieties” - “No conflicting decisions” - “Inadmissible referral by the President of the EPO”

1. In decision T 356/93 (OJ EPO 1995, 545) it was held that a claim defining genetically modified plants having a distinct, stable, herbicide-resistance genetic characteristic was not allowable under Article 53(b) EPC because the claimed genetic modification itself made the modified or transformed plant a "plant variety" within the meaning of Article 53(b) EPC.

 

 2. This finding is not in conflict with the findings in either of decisions T 49/83 (OJ EPO 1984, 112) or T 19/90 (OJ EPO 1990, 476).

 

3. Consequently, the referral of the question:

"Does a claim which relates to plants or animals but wherein specific plant or animal varieties are not individually claimed contravene the prohibition on patenting in Article 53(b) EPC if it embraces plant or animal varieties?"

 to the Enlarged Board of Appeal by the President of the EPO is inadmissible under Article 112(1) (b) EPC.

G 2/95

Replacement of application documents/ATOTECH 

 

“Substitution of complete documents forming an application by other documents by way of a correction under Rule 88 EPC (no)”

The point of law referred to the Enlarged Board of Appeal is to be answered as follows:

 

 The complete documents forming a European patent application, that is the description, claims and drawings, cannot be replaced by way of a correction under Rule 88 EPC by other documents which the applicants had intended to file with their request for grant.

G 1/95

Fresh grounds for opposition/DE LA RUE 

 

“No power to examine fresh grounds for opposition without agreement of patentee”

In a case where a patent has been opposed on the grounds set out in Article 100(a) EPC, but the opposition has only been substantiated on the grounds of lack of novelty and lack of inventive step, the ground of unpatentable subjectmatter based upon Articles 52(1) and (2) EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee.

G 2/94

Representation/HAUTAU II 

 

“Oral submissions by an accompanying person in ex parte proceedings” - “Oral submissions by a former member of the board of appeal in either ex parte or inter partes proceedings”

1. A board of appeal has a discretion to allow an accompanying person (who is not entitled under Article 134(1) or (7) EPC to represent parties to proceedings before the EPO) to make submissions during oral proceedings in ex parte proceedings, in addition to the complete presentation of a party's case by the professional representative.

 

2. (a) In ex parte proceedings a professional representative should request permission for the making of such oral submissions in advance of the day appointed for oral proceedings. The request should state the name and qualifications of the person for whom permission is requested, and should specify the subject-matter of the proposed oral submissions.

The board of appeal should exercise its discretion in accordance with the circumstances of each individual case. The main criterion to be considered is that the board should be fully informed of all relevant matters before deciding the case. The board should be satisfied that the oral submissions are made by the accompanying person under the continuing responsibility and control of the professional representative.

(b) During either ex parte or inter partes proceedings, a board of appeal should refuse permission for a former member of the boards of appeal to make oral submissions during oral proceedings before it, unless it is completely satisfied that a sufficient period of time has elapsed following termination of such former member's appointment to the boards of appeal, so that the board of appeal could not reasonably be suspected of partiality in deciding the case if it allowed such oral submissions to be made.

 

A board of appeal should normally refuse permission for a former member of the boards of appeal to make oral submissions during oral proceedings before it, until at least three years have elapsed following termination of the former member's appointment to the boards of appeal. After three years have elapsed, permission should be granted except in very special circumstances. 

 

Remarks: The working language was English in accordance with Article 4(6) of the Rules of Procedure of the Enlarged Board of Appeal (OJ EPO 1983, 3; as amended in OJ EPO 1989, 362, and 1994, 443).

G 1/94

Intervention/ALLIED COLLOIDS 

 

“Admissibility of intervention during appeal proceedings”

Intervention of the assumed infringer under Article 105 EPC is admissible during pending appeal proceedings and may be based on any ground for opposition under Article 100 EPC.

G 10/93

Scope of examination in ex parte appeal/SIEMENS 

 

“Inclusion of new grounds in ex parte proceedings” - “Reformatio in peius”

In an appeal from a decision of an examining division in which a European patent application was refused the board of appeal has the power to examine whether the application or the invention to which it relates meets the requirements of the EPC. The same is true for requirements which the examining division did not take into consideration in the examination proceedings or which it regarded as having been met. If there is reason to believe that such a requirement has not been met, the board shall include this ground in the proceedings.

G 9/93

Opposition by patent proprietor/PEUGEOT AND CITROEN 

 

“Opposition filed by proprietor against own patent – receivability”

A European patent cannot be opposed by its own proprietor (overturns ruling in G 1/84).

G 8/93

Withdrawal of opposition/SERWANE II 

 

“Withdrawal of opposition without withdrawal of appeal” - “Termination of appeal proceedings”

The filing by an opponent, who is sole appellant, of a statement withdrawing his opposition immediately and automatically terminates the appeal proceedings, irrespective of whether the patent proprietor agrees to termination of those proceedings and even if in the Board of Appeal's view the requirements under the EPC for maintaining the patent are not satisfied.

G 7/93

Late amendments/WHITBY II 

 

“Amendments after a Rule 51(6) communication - discretion of Examining Divisions” - “Reservations under Article 167(2) EPC”

1. An approval of a notified text submitted by an applicant pursuant to Rule 51(4) EPC does not become binding once a communication in accordance with Rule 51(6) EPC has been issued. Following issue of such a communication under Rule 51(6) EPC and until issue of a decision to grant the patent, the Examining Division has a discretion under Rule 86(3), second sentence, EPC, whether or not to allow amendment of the application.

2. When exercising such discretion following issue of a communication under Rule 51(6) EPC, an Examining Division must consider all relevant factors. In particular it must consider and balance the applicant's interest in obtaining a patent which is legally valid in all of the designated States, and the EPO's interest in bringing the examination procedure to a close by the issue of a decision to grant the patent. Having regard to the object underlying the issue of a communication under Rule 51(6) EPC, which is to conclude the granting procedure on the basis of the previously approved text, the allowance of a request for amendment at that late stage in the granting procedure will be an exception rather than the rule.

 

3.Reservations under Article 167 (2) EPC do not constitute requirements of the EPC which have to be met according to Article 96(2) EPC.

G 5/93

Re-establishment/NELLCOR

 

“Applicability of Article 122(5) EPC”

The provisions of Article 122(5) EPC apply to the time limits provided for in Rule 104b(1)(b)(i) and (ii) EPC in conjunction with Articles 157(2)(b) and 158(2) EPC. This notwithstanding, Euro- PCT applicants may be reestablished in the time limit for paying the national fee provided for in Rule 104b EPC in all cases where re-establishment of rights was applied for before decision G 3/91 was made available to the public.

G 4/93

Non-appealing party/MOTOROLA

 

"Reformation in peius" "Patent maintained in amended form in accordance with auxiliary request" "Opposing parties each adversely affected" "Appeal by one party" "Requests by a non-appealing party which go beyond the appellants requests in the Notice of Appeal" "Minority opinion"

I. If the patent proprietor is the sole appellant against an interlocutory decision maintaining a patent in amended form, neither the Board of Appeal nor the non-appealing opponent as a party to the proceedings as of right under Article 107, second sentence, EPC, may challenge the maintenance of the patent as amended in accordance with the interlocutory decision.

 

II. If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted during the appeal proceedings to defending the patent in the form in which it was maintained by the Opposition Division in its interlocutory decision. Amendments proposed by the patent proprietor as a party to the proceedings as of right under Article 107, second sentence, EPC, may be rejected as inadmissible by the Board of Appeal if they are neither appropriate nor necessary.

G 3/93

Priority interval

 

“Priority - document published during the priority interval” - “State of the art - document published during the priority interval” - “Invalid priority - different invention” - “Obiter dictum - admissibility of the referral”

1. A document published during the priority interval, the technical contents of which correspond to that of the priority document, constitutes prior art citable under Article 54(2) EPC against a European patent application claiming that priority, to the extent such priority is not validly claimed.

 

2. This also applies if a claim to priority is invalid due to the fact that the priority document and the subsequent European  application do not concern the same invention because the European application claims subject-matter not disclosed in the priority document. 

G 2/93

Hepatitis A virus/UNITED STATES OF AMERICA II 

 

“Sufficiency of disclosure” - “Culture deposit information”

The information concerning the file number of a culture deposit according to Rule 28(1)(c) EPC may not be submitted after expiry of the time limit set out in Rule 28 (2)(a) EPC.

G 1/93

Limiting feature/ADVANCED SEMICONDUCTOR PRODUCTS  

 

“Conflicting requirements of Article 123, paragraphs 2 and 3, EPC”

1. If a European patent as granted contains subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC and which also limits the scope of protection conferred by the patent, such patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under Article 100(c) EPC prejudices the maintenance of the patent. Nor can it be amended by deleting such limiting subject-matter from the claims, because such amendment would extend the protection conferred, which is prohibited by Article 123(3) EPC. Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subjectmatter without violating Article 123 (3) EPC.

 

2. A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC. The ground for opposition under Article 100(c) EPC therefore does not prejudice the maintenance of a European patent which includes such a feature.

G 10/92

Divisional application 

 

“Filing of divisional application: time limit”

Under the amended version of Rule 25 EPC in force since 1 October 1988 an applicant may only file a divisional application on the pending earlier European patent application up to the approval in accordance with Rule 51(4) EPC.

G 9/92

Non-appealing party/BMW 

 

“Reformatio in peius” - “Patent maintained in amended form in accordance with auxiliary request” - “Opposing parties each adversely affected” - “Appeal by one party” - “Requests by a nonappealing party which go beyond the appellant's requests in the notice of appeal” - “Minority opinion”

1. If the patent proprietor is the sole appellant against an interlocutory decision maintaining a patent in amended form, neither the Board of Appeal nor the non-appealing opponent as a party to the proceedings as of right under Article 107, second sentence, EPC, may challenge the maintenance of the patent as amended in accordance with the interlocutory decision.

 

2.If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted during the appeal proceedings to defending the patent in the form in which it was maintained by the Opposition Division in its interlocutory decision. Amendments proposed by the patent proprietor as a party to the proceedings as of right under Article 107, second sentence, EPC, may be rejected as inadmissible by the Board of Appeal if they are neither appropriate nor necessary.

 

Remarks: The same points of law were referred to the Enlarged Board of Appeal in case G 4/93 (Motorola, Inc. vs. N.V. Philips' Gloeilampenfabrieken and Interessengemeinschaft für Rundfunkschutzrechte e.V.). The English translation of G 9/92 corresponds to the text in the language of the proceedings of the decision in respect of G 4/93, which was issued on the same day.

G 8/92

Vorlage an die Große Beschwerdekammer/KLEHR

 

"Zulässigkeit der Vorlage einer Rechtsfrage an die Große Beschwerdekammer"

NOTE : DE only

                       

 Eine Beschwerdekammer ist nur dann berechtigt, eine Rechtsfrage der Großen Beschwerdekammer vorzulegen, wenn die Beschwerde zulässig ist, es sei denn, daß die Vorlage gerade eine Rechtsfrage der Zulässigkeit der Beschwerde betrifft.

G 6/92

Re-establishment/DURIRON

 

“Applicability of Article 122(5) EPC”

The time limit under Article 94, paragraph 2, EPC is excluded from the restitutio in integrum by the provisions of paragraph 5 of Article 122 EPC. 

 

Remarks: Decision G 6/92 is identical in its wording to decision G 5/92, OJ EPO 1994, 22. The proceedings were consolidated

G 5/92

Re-establishment/HOUPT

 

“Applicability of Article 122(5) EPC”

The time limit under Article 94, paragraph 2, EPC is excluded from the restitutio in integrum by the provisions of paragraph 5 of Article 122 EPC.

 

Remarks: Decision G 5/92 is identical in its wording to decision G 6/92, OJ EPO 1994, 25. The proceedings were consolidated.

G 4/92

Basis of decisions 

 

“Right to comment” - “Party absent from oral proceedings”

1. A decision against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings.

 

 2. Similarly, new evidence may not be considered unless it has been previously notified and it merely supports the assertions of the party who submits it, whereas new arguments may in principle be used to support the reasons for the decision.

G 3/92

Unlawful applicant/LATCHWAYS 

 

“Dissenting opinion” - “Final decision by a national court” -“Party other than applicant entitled to patent” - “Third parties' interests” - “Withdrawal of original application by unlawful applicant” - “Filing of new application by lawful applicant”

When it has been adjudged by a final decision of a national court that a person other than the applicant is entitled to the grant of a European patent, and that person, in compliance with the specific requirements of Article 61 (1) EPC, files a new European patent application in respect of the same invention under Article 61(1) (b) EPC, it is not a pre-condition for the application to be accepted that the earlier original usurping application is still pending before the EPO at the time the new application is filed.

G 2/92

Non-payment of further search fees 

 

“Lack of unity of invention - consequence of nonpayment of further search fees”

An applicant who fails to pay the further search fees for a non-unitary application when requested to do so by the Search Division under Rule 46(1) EPC cannot pursue that application for the subject-matter in respect of which no search fees have been paid. Such an applicant must file a divisional application in respect of such subject-matter if he wishes to seek protection for it.

G 1/92

Availability to the Public 

 

“Novelty - State of the art - Availability - Composition of the product - Public prior use”

1. The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.

 

2. The same principle applies mutatis mutandis to any other product.

G 12/91

Final decision/ NOVATOME II 

 

“Conclusion of written proceedings, Handing over of decision by formalities section to EPO postal service”

The decision-making process following written proceedings is completed on the date the decision to be notified is handed over to the EPO postal service by the decision-taking department's formalities section.

G 11/91

Glu-Gln/CELTRIX 

 

“Correction of errors”

1. The parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) may be corrected under Rule 88, second sentence, EPC only within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed. Such a correction is of a strictly declaratory nature and thus does not infringe the prohibition of extension under Article 123(2) EPC.

 

2. Evidence of what was common general knowledge on the date of filing may be furnished in connection with an admissible request for correction in any suitable form.

G 10/91

Examination of oppositions/appeals 

 

“Extent of obligation and power to examine grounds for opposition”

1. An Opposition Division or a Board of Appeal is not obliged to consider all the grounds for opposition referred to in Article 100 EPC, going beyond the grounds covered by the statement under Rule 55(c) EPC.

 

2. In principle, the Opposition Division shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with Article 99(1) in conjunction with Rule 55(c) EPC. Exceptionally, the Opposition Division may in application of Article 114(1) EPC consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent.

 

3. Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.

G 9/91

Power to examine/ROHM AND HAAS 

 

“Extent of power to examine opposition”

The power of an Opposition Division or a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC depends upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55 (c) EPC. However, subject-matters of claims depending on an independent claim, which falls in opposition or appeal proceedings, may be examined as to their patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information.

G 8/91

Withdrawal of appeal/BELL 

 

“Effect of withdrawal of the appeal”

In so far as the substantive issues settled by the contested decision at first instance are concerned, appeal proceedings are terminated, in ex parte and inter partes proceedings alike, when the sole appellant withdraws the appeal.

G 7/91

Withdrawal of appeal/BASF 

 

“Effect of withdrawal of the appeal”

In so far as the substantive issues settled by the contested decision at first instance are concerned, a Board of Appeal may not continue opposition appeal proceedings after the sole appellant, who was the opponent in the first instance, has withdrawn his appeal.

G 6/91

Fee reduction/ ASULAB II 

 

“Entitlement to fee reduction”

1. The persons referred to in Article 14(2) EPC are entitled to the fee reduction under Rule 6(3) EPC if they file the essential item of the first act in filing, examination or appeal proceedings in an official language of the State concerned other than English, French or German, and supply the necessary translation no earlier than simultaneously.

 

 2. The essential item of the first act in appeal proceedings is the notice of appeal, so to secure entitlement to the reduction in the appeal fee it suffices that said document be filed in a Contracting State official language which is not an official language of the European Patent Office and translated into one of the latter languages, even if subsequent items such as the statement of grounds of appeal are filed only in an EPO official language.

G 5/91

Appealable decision/ DISCOVISION 

 

“Suspected partiality of a member of an Opposition Division - ground of appeal?”

1. Although Article 24 EPC applies only to members of the Boards of Appeal and of the Enlarged Board of Appeal, the requirement of impartiality applies in principle also to employees of the departments of the first instance of the EPO taking part in decision-making activities affecting the rights of any party.

 

2. There is no legal basis under the EPC for any separate appeal against an order of a director of a department of the first instance such as an Opposition Division rejecting an objection to a member of the division on the ground of suspected partiality. However, the composition of the Opposition Division may be challenged on such a ground of appeal against the final decision of the division or against an interlocutory decision under Article 106(3) EPC allowing separate appeal.

G 4/91

Intervention/DOLEZYCH II 

 

“Intervention”

1. It is a prerequisite for intervention in opposition proceedings by an assumed infringer pursuant to Article 105 EPC that there are opposition proceedings in existence at the point in time when a notice of intervention is filed.

 

2. A decision by an Opposition Division which decides upon the issues raised by the opposition is a final decision in the sense that thereafter the Opposition Division has no power to change its decision.

 

3. Proceedings before an Opposition Division are terminated upon issue of such a final decision, regardless of when such decision takes legal effect.

 

4. In a case where, after issue of a final decision by an Opposition Division, no appeal is filed by a party to the proceedings before the Opposition Division, a notice of intervention which is filed during the two-month period for appeal provided by Article 108 EPC has no legal effect.

G 3/91

Re-establishment of rights/FABRITIUS II   

 

“Applicability of Article 122(5) EPC to the time limits under Rule 104b(1)(b) and (c) EPC together with Articles 157 (2)(b) and 158(2) EPC”

Article 122(5) EPC is applicable both to the time limits provided for in Articles 78(2) and 79(2) EPC and to those provided for in Rule 104b(1)(b) and (c) EPC in conjunction with Articles 157(2)(b) and 158(2) EPC.

G 2/91

Appeal fees/KROHNE 

 

“Reimbursement of appeal fees where several parties have filed an appeal”

1. A person who is entitled to appeal but does not do so and instead confines himself to being a party to the appeal proceedings under Article 107, second sentence, EPC, has no independent right to continue the proceedings if the appellant withdraws the appeal. 

 

2. Appeal fees cannot be reimbursed simply because several parties to proceedings before the EPO have validly filed an appeal against the same decision.

G 1/91

Unity/SIEMENS 

 

“Unity in opposition - legally irrelevant”

Unity of invention (Article 82 EPC) does not come under the requirements that a European patent and the invention to which it relates must meet under Article 102(3) EPC when the patent is maintained in amended form. It is consequently irrelevant in opposition proceedings that the European patent as granted or amended does not meet the requirement of unity.

G 2/90

Responsibility of the Legal Board of Appeal/Kolbenschmidt 

 

“Responsibility of the Legal Board of Appeal” - “Appeals against decisions of the formalities officer”

1. Under Article 21(3)(c) EPC, the Legal Board of Appeal is competent only to hear appeals against decisions taken by an Examining Division consisting of fewer than four members when the decision does not concern the refusal of a European patent application or the grant of a European patent. In all other cases, i.e. those covered by Article 21(3)(a), (3)(b) and (4) EPC, the Technical Board of Appeal is competent. 

 

2. The provisions relating to competence in Article 21(3) and (4) EPC are not affected by Rule 9(3) EPC.

G 1/90

Revocation of the patent 

 

“Revocation of the patent by a decision” - “Revocation, failure to meet formal requirements when the patent is maintained as amended” - “Termination of opposition proceedings” - “Loss of rights, legal fictions”

The revocation of a patent under Article 102(4) and (5) EPC requires a decision.

G 3/89

Correction under Rule 88, second sentence, EPC

 

“Correction of the parts of a European patent application or of a European patent relating to the disclosure”

1. The parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) may be corrected under Rule 88, second sentence, EPC only within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed. Such a correction is of a strictly declaratory nature and thus does not infringe the prohibition of extension under Article 123(2) EPC.

 

2. Evidence of what was common general knowledge on the date of filing may be furnished in connection with an admissible request for correction in any suitable form.

G 2/89

Non-unity a posteriori 

 

“Competence of the Enlarged Board of Appeal in protest cases under PCT”- “Non-unity a posteriori”

The EPO in its function as an ISA may, pursuant to Article 17(3)(a) PCT, request a further search fee where the international application is considered to lack unity of invention "a posteriori".

G 1/89

Polysuccinate esters

 

“Competence of the Enlarged Board of Appeal in protest cases under PCT” – “Non-unity a posteriori”

The agreement between the European Patent Organisation and WIPO dated 7 October 1987, including the obligation under its Article 2 for the EPO to be guided by the PCT guidelines for international search, is binding upon the EPO when acting as an ISA and upon the Boards of Appeal of the EPO when deciding on protests against the charging of additional search fees under the provisions of Article 17(3)(a) PCT. Consequently, as foreseen in these guidelines, an international application may, under Article 17(3)(a) PCT, be considered not to comply with the requirement of unity of invention, not only "a priori" but also "a posteriori", i.e. after taking prior art into consideration. However, such consideration has only the procedural effect of initiating the special procedure laid down in Article 17 and Rule 40 PCT and is, therefore, not a "substantive examination" in the normal sense of that term.

G 8/88

Administrative Agreement / MEDTRONIC

Cf G5/88

G 7/88

Administrative Agreement / MEDTRONIC

Cf G5/88

G 6/88

Plant growth regulating agent/BAYER 

 

“Second non-medical indication” - “Novelty of second non-medical use with same technical means of of execution

A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public.

G 5/88

Administrative Agreement / MEDTRONIC

 

“Treatment of documents intended for the EPO and received by the German Patent Office in Berlin” - “Functions and powers of the President” - “Principle of good faith” - “Protection of the legitimate expectations of users of the EPO”

1. The capacity of the President of the European Patent Office to represent the European Patent Organisation by virtue of Article 5(3) EPC is one of his functions but is not one of his powers. The extent of the President's power is governed by the EPC, but not by Article 5(3) EPC.

 

2. To the extent that the Administrative Agreement dated 29 June 1981 between the President of the EPO and the President of the German Patent Office contains terms regulating the treatment of documents intended for the EPO and received by the German Patent Office in Berlin, the President of the EPO did not himself have the power to enter into such an agreement on behalf of the EPO, at any time before the opening of the Filing Office for the EPO in Berlin on 1 July 1989.

 

3. In application of the principle of good faith and the protection of the legitimate expectations of users of the EPO, if a person has at any time, since publication of the Agreement in the Official Journal and before 1 July 1989, filed documents intended for the EPO at the German Patent Office in Berlin (otherwise than by hand), the EPO was then bound to treat such documents as if it had received them on the date of receipt at the German Patent Office in Berlin.

G 4/88

Transfer of opposition/MAN

 

 “Transfer of rights - status of party in opposition proceedings - dissolution of opposing company - legal person”

An opposition pending before the European Patent Office may be transferred or assigned to a third party as part of the opponent's business assets together with the assets in the interests of which the opposition was filed.

G 2/88

Friction reducing additive/MOBIL OIL III

 

"Amendment in opposition proceedings - change of category (here: from "compound" and "composition" to use of compound for a particular purpose")" - "Novelty of such a use claim over disclosure of same compound for different purpose" - "Second non-medical indication"

I. A change of category of granted claims in opposition proceedings is not open to objection under Article 123(3) EPC, if it does not result in extension of the protection conferred by the claims as a whole, when they are interpreted in accordance with Article 69 EPC and its Protocol. In this context, the national laws of the Contracting States relating to infringement should not be considered.  

 

II. An amendment of granted claims directed to "a compound" and to "a composition including such compound", so that the amended claims are directed to "the use of that compound in a composition " for a particular purpose, is not open to objection under Article 123(3) EPC.

 

III. A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open toobjection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public

G 1/88

Opponent´s silence/HOECHST

 

"Admissibility of appeal by opponent" - "Silence in response to an invitation under Rule 58 (4)" - "Application of Rule 58 (4)"

The fact that an opponent has failed, within the time allowed, to make any observations on the text in which it is intended to maintain the European patent after being invited to do so under Rule 58(4) EPC does not render his appeal inadmissible.

G 1/86

Re-establishment of rights of opponent/VOEST ALPINE

 

Re-establishment of rights of appellant as opponent" - "Time limit for filing grounds of appeal"

Article 122 EPC is not to be interpreted as being applicable only to the applicant and patent proprietor. An appellant as opponent may have his rights re-established under Article 122 EPC if he has failed to observe the time limit for filing the statement of grounds of appeal.

G 1/84

"Opposition by proprietor / MOBIL OIL"

 

Opposition by proprietor

A notice of opposition against a European patent is not inadmissible merely because it has been filed by the proprietor of that patent.

G 6/83  G 5/83  G 1/83

Second medical indication/EISAI

 

“Interpretation of the EPC/Vienna Convention” -

“Therapeutical use claims”

1. A European Patent with claims directed to the use may not be granted for the use of a substance or composition for the treatment of the human or animal body by therapy.

 

2. A European patent may be granted with claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application.