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Boards of appeal

Cases received and settled

In the course of 2008, the EPO's boards of appeal registered 2 464 new cases, a 14.4 % increase on the year before (2007: 2 153 cases), and they settled 1 849 appeals, an 8.6 % increase in production over the 2007 figure of 1 702.¨Fig. 1

The technical boards received 2 403 new appeals (2007: 2 090) and settled 1 782 cases (2007: 1 661). The number of new PCT protests filed with the technical boards was 41, the same as in 2007, and 45 cases were settled (41 in 2007). Fig. 2

Eighteen new appeals were brought before the Legal Board of Appeal (2007: 15), which settled thirteen cases (2007: 21), while the Disciplinary Board received 28 new appeals (2007: 46) and settled 50 cases (2007: 17).

Enlarged Board of Appeal

In 2008 there were four new referrals to the Enlarged Board of Appeal (2007: 2) and one case was settled (2007: 3).

In G 2/06 the Enlarged Board decided that Rule 28 (c) EPC (formerly Rule 23d (c) EPC) forbade the patenting of claims directed to products which at the filing date could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which those products were derived, even if that method was not part of the claims. It was of no relevance that after the filing date the same products could be obtained without having to re - sort to a method necessarily involving the destruction of human embryos.

In its reasoning the Enlarged Board concluded that the legislators (those of the Implementing Regulations and those of Directive 98/44/EC of 6 July 1998) wanted to exclude inventions such as the one underlying the referral from patentability, and that in so doing they had remained within the scope of Article 53 (a) EPC and of the TRIPS Agreement.

On the question of the applicability of Rule 28 (c) EPC the Enlarged Board answered that the rule applied to all pending applications, including those filed before it entered into force. The request to refer questions of interpretation of Rule 28 (c) EPC to the European Court of Justice (ECJ) for a preliminary ruling was rejected as inadmissible because the Enlarged Board concluded that it had no power to ask the ECJ for such a ruling under the existing provisions of the EPC.

At the end of 2008 there were fourteen cases pending before the Enlarged Board, five being based on referrals by the boards of appeal, one being a referral from the President of the EPO and eight being due to petitions for review.

In G 3/08 the President referred a number of questions concerning the exclusion from patentability of computer programs as such (Article 52 (2) (c) and (3) EPC). One is whether a computer program can only be excluded as a computer program as such if it is explicitly claimed as a computer program.

Further issues are whether a claim can avoid exclusion merely by explicit mention of the use of a computer or computer-readable data storage medium, whether a claimed feature must cause a technical effect on a physical entity in the real world in order to contribute to a claim's technical character, and whether the activity of programming a computer necessarily involves technical considerations.

Turning to referrals from the boards, in G 1/07 the questions concern methods for treatment by surgery and whether, inter alia, a claimed imaging method for a diagnostic purpose, which comprises or encompasses a step consisting in a physical intervention practised on the human or animal body, is to be excluded from patent protection as a method for treatment of the human or animal body by surgery pursuant to Article 52 (4) EPC 1973 if such a step does not per se aim at maintaining life and health.

G 2/07 relates to a non-microbiological process for the production of plants which contains the steps of crossing and selecting plants, and the question is whether such a process escapes the exclusion of Article 53 (b) EPC 1973 merely because it contains, as a further step or as part of any of the steps of crossing and selection, an additional feature of a technical nature. This referral has been consolidated with G 1/08, which deals with the same issue.

In G 2/08 the questions referred to the Enlarged Board include the following: where use of a particular medicament to treat a particular illness is already known, can this known medicament be patented under the provisions of Articles 53 (c) and 54 (5) EPC for use in a different, new and inventive treatment by therapy of the same illness? If the answer is yes, is such patenting also possible where the only novel feature of the treatment is a new and inventive dosage regime?

G 4/08 concerns the issue of whether an applicant whose PCT application has been filed and published in an official language of the EPO can, on entry into the regional phase before the EPO, file a translation of the application into another official language which then becomes the language of the proceedings.

Following the changes made under EPC 2000, Article 112 a EPC allows parties adversely affected by a decision of the boards of appeal to file a petition for review by the Enlarged Board on the grounds that a fundamental procedural defect occurred in the appeal proceedings or that a criminal act may have had an impact on the decision. By the end of 2008, eleven petitions had been filed, one of which has since been withdrawn. In three cases, the petitions have been found to be clearly inadmissible or clearly unallowable; the other seven are pending.  

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