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Index of decisions and opinions of the Enlarged Board of Appeal published in the Official Journal of the EPO
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Case number,
date,
publication
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Headword/Subject
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Article, Rule of the
EPC 1973
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"Second medical indication/EISAI"
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Interpretation of the EPC/Vienna Convention – therapeutical use claims
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Art. 52(1)(4), 54(5), 52, 57 EPC;
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"Re‑establishment of rights of opponent/
VOEST ALPINE"
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Re‑establishment of rights of appellant as opponent – Time limit for filing grounds of appeal
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Art. 108, third sentence, 112(1), 122 EPC
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"Opponent’s silence/HOECHST"
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Admissibility of appeal by opponent – Silence in response to an invitation under Rule 58(4) – Application of Rule 58(4)
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Art. 102(3), 107 EPC
R. 58(4) EPC
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"Friction reducing additive/MOBIL OIL III"
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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
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Art. 54, 64, 69, 112(1)(a), 123 EPC
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"Transfer of opposition/MAN"
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Transfer of rights – status of party in opposition proceedings – dissolution of opposing company – legal person
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Art. 99(4), 112(1)(a) EPC
R. 60(2) EPC
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"Administrative Agreement/MEDTRONIC"
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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
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Art. 4, 5, 6, 7, 10, 33, 99(1), 112 EPC
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"Plant growth regulating agent/BAYER"
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Second non–medical indication – Novelty of second non–medical use with same technical means of execution
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Art. 54, 69, 112(1)(a) EPC
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"Polysuccinate esters"
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Competence of the Enlarged Board of Appeal in protest cases under the PCT – Non–unity a posteriori
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"Non–unity a posteriori"
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Competence of the Enlarged Board of Appeal in protest cases under the PCT – Non–unity a posteriori
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"Correction under Rule 88, second sentence, EPC"
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Correction of the parts of a European patent application or of a European patent relating to the disclosure
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Art. 100(c), 117(1), 123(1)(2), 138(1)(c) EPC
R. 86, 88, second sentence, EPC
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"Revocation of the patent"
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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
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Art. 102(4)(5), 106, 112(1)(b) EPC
R. 58(5), 69(1) EPC
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"Responsibility of the Legal Board of Appeal/KOLBENSCHMIDT"
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Responsibility of the Legal Board of Appeal – Appeals against decisions of the formalities officer
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Art. 21 EPC
R. 9(3) EPC
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"Unity/SIEMENS"
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Unity in opposition – legally irrelevant
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Art. 82, 102(3) EPC
R. 61a EPC
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"Appeal fees/KROHNE"
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Reimbursement of appeal fees where several parties have filed an appeal
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Art. 107 EPC
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"Re–establishment of rights/FABRITIUS II"
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Applicability of Article 122(5) EPC to the time limits under Rule 104b(1)(b) and (c) EPC (107(1)(c) and (e) EPC) together with Articles 157(2)(b) and 158(2) EPC
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Art. 78(2), 79(2), 122(5), 157(2)(b), 158(2) EPC
R. 104b(1)(b)(c) EPC
(107(1)(c)(e) EPC)
(see however G 5/93)
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"Intervention/DOLEZYCH II"
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Intervention (in opposition proceedings by an assumed infringer)
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Art. 105, 107 EPC
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"Appealable decision/DISCOVISION"
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Suspected partiality of a member of an Opposition Division – ground of appeal?
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Art. 19(2), 24 EPC
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"Fee reduction/ASULAB"
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Entitlement to fee reduction
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Art. 14(2) and (4) EPC
R. 6(3) EPC
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"Withdrawal of appeal/BASF"
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Effect of withdrawal of the appeal (by the sole appellant, who was the opponent in the first instance)
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Art. 113(2), 114(1) EPC
R. 60(2), 66(1) EPC
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"Withdrawal of appeal/BELL"
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Effect of withdrawal of the appeal (by the sole appellant)
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Art. 113(2), 114(1) EPC
R. 60(2), 66(1) EPC
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"Power to examine/ROHM AND HAAS"
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Extent of power to examine opposition
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Art. 101, 102, 110, 114 EPC
R. 55, 56 EPC
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"Examination of oppositions/appeals"
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Extent of obligation and power to examine grounds for opposition
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Art. 99 to 102, 110, 114 EPC
R. 55, 56, 66 EPC
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"Glu–Gln/CELTRIX"
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Correction of errors
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Art. 100(c), 117(1), 123(1)(2), 138(1)(c) EPC
R. 86 and 88, second sentence, EPC
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"Final decision/NOVATOME II"
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Conclusion of written proceedings – Handing over of decision by formalities section to EPO postal service
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R. 68 EPC
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"Availability to the public"
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Novelty – state of the art – availability – composition of product – public prior use
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Art. 54(2), 112(1)(b) EPC
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"Non–payment of further search fees"
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Lack of unity of invention – consequences of non–payment of further search fees
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Art. 82 EPC
R. 46 EPC
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"Unlawful applicant/LATCHWAYS"
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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
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Art. 60, 61, 167 EPC
R. 13, 14, 15, 16 EPC;
Art. 1, 9 Protocol on Recognition;
Art. 12a RPEBA
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"Basis of decisions"
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Right to comment – Party absent from oral proceedings
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Art. 113(1), 114(1)(2) EPC
R. 71(2) EPC
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"Re–establishment/HOUPT"
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Applicability of Article 122(5) EPC
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Art. 122(5) EPC
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"Re–establishment/DURIRON"
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Applicability of Article 122(5) EPC
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Art. 122(5) EPC
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"Non–appealing party/BMW"
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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 non–appealing party which go beyond the appellant’s requests in the notice of appeal – Minority opinion
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Art. 101(2), 107, 111, 114(1) EPC
R. 58(2), 64(b), 65(1), 66(1) EPC
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"Divisional application"
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Filing of divisional application: time limit
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R. 25 EPC
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"Limiting feature/ADVANCED SEMICONDUCTOR PRODUCTS"
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Conflicting requirements of Article 123, paragraphs 2 and 3, EPC
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Art. 123(2), (3) EPC
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"Hepatitis A Virus/UNITED STATES OF AMERICA II"
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Sufficiency of disclosure – Culture deposit information
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Art. 83 EPC
R. 28 EPC
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"Priority interval"
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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
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Art. 54(2), 87 to 89 EPC
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"Re–establishment/NELLCOR"
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Applicability of Article 122(5) EPC
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Art. 122(5), 150, 157(2)(b), 158(2) EPC
R. 104b(1)(b), EPC (107(1)(c) EPC)
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"Late amendments/WHITBY II"
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Amendments after a Rule 51(6) communication – discretion of Examining Divisions – Reservations under Article 167(2) EPC
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Art. 96(2), 113(2), 123(1), 167(2) EPC
R. 51(4)(6), 86(3) EPC
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"Withdrawal of opposition/SERWANE II"
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Withdrawal of opposition without withdrawal of appeal – Termination of appeal proceedings
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Art. 114(1) EPC
R. 60(2), 66(1) EPC
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"Opposition by patent proprietor/PEUGEOT AND CITROEN"
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Opposition filed by proprietor against own patent – receivability
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Art. 99 EPC
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"Scope of examination in ex parte appeal/SIEMENS"
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Inclusion of new grounds in ex parte
proceedings – Reformatio in peius
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Art. 96(2), 97(1), 110, 111(1), 114(1) EPC
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"Intervention/ALLIED COLLOIDS"
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Admissibility of intervention during appeal proceedings
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Art. 105 EPC
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"Representation/HAUTAU II"
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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
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Art. 116, 133, 134 EPC
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"Fresh grounds for opposition/DE LA RUE"
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No power to examine fresh grounds for opposition without agreement of patentee
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Art. 99, 100(a)(b)(c), 114(1) EPC
R. 55, 56 EPC
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"Replacement of application documents/ATOTECH"
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Substitution of complete documents forming an application by other documents by way of a correction under Rule 88 EPC (no)
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Art. 14(1)(2), 80(d), 87(2), 100(c), 123(2), 138(1)(c), 164(2) EPC
Art. 4A(2) Paris Convention
R. 88 EPC
R. 91.1(c) PCT
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"Inadmissible referral"
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Patentability of plant and animal varieties – No conflicting decision – Inadmissible referral by the President of the EPO
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Art. 53(b), 112(1)(b) EPC
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"Representation/BOGASKY"
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Oral submission by an accompanying person in opposition or opposition appeal proceedings
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Art. 116, 117, 133, 134 EPC
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"Interpretation of Rule 71a(1) EPC/GE CHEMICALS"
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Interpretation of Rule 71a(1) EPC vis–à–vis the boards of appeal
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Art. 23, 33(1)(b), 112(1)(a), 164(2) EPC
Art. 11(2), 18 RPBA
R. 10(2), 11, 66(1), 71, 71a(1) EPC
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"Fresh grounds for opposition/ETHICON"
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No power to examine fresh grounds for opposition without agreement of patentee
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Art. 99, 100(a)(b)(c), 114(1) EPC
R. 55, 56 EPC
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"Correction of decision to grant/US GYPSUM II"
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Relative competence of the Technical and Legal Boards of Appeal – Refusal of a correction of the decision to grant
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Art. 21(3) EPC
R. 89 EPC
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"Request with a view to revision/ETA"
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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
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Art. 21, 23(1)(3), 24, 106(1), 110(1), 111(1), 113, 114, 116, 121, 122, 125, 127 EPC
R. 10(2), 11, 65(1), 66(2), 67, 89, 90, 92(1) (2) EPC
Art. 10 RPBA
Art. 11a, 11b RPEBA
Art. 23 RDR
Art. 31, 32, 62(5) TRIPS
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"Good faith/UNILEVER"
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Fee for appeal – Principle of good faith – Principle of the protection of legitimate expectations
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Art. 112(1)(a), 108 EPC
R. 69(1) EPC
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"Opposition on behalf of a third party/INDUPACK"
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Admissibility of opposition – acting on behalf of a third party – Circumvention of the law by abuse of process
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Art. 99 EPC
R. 55 EPC
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"Opposition on behalf of a third party/GENENTECH"
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Admissibility of opposition – acting on behalf of a third party – Circumvention of the law by abuse of process
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Art. 99 EPC
R. 55 EPC
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"Transgenetic plant/NOVARTIS II"
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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
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Art. 52, 53(b), 54, 64(2) EPC
R. 23b EPC
Art. 2(b) Strasbourg Patent Convention
Art. 2 UPOV Convention 1961
Art. 1(vi) UPOV Convention 1991
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"Requirement for claiming priority of the ’same invention’"
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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
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Art. 54(2)(3), 56, 60(2), 83, 84, 87(1)(4), 88(2)(3)(4), 89, 93, 112(1)(b), 123(2)(3) EPC
Art. 4A(1), 4C(4), 4F, 4H, 19 Paris Convention
Art. 11b RPEBA
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"Six–month period/UNIVERSITY PATENTS"
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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
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Art. 54(2)(3), 55(1)(a), 56, 89, 112(1)(a) EPC
R. 23 EPC
Art. 17(2) RPBA
Art. 2, 4 Paris Convention
Art. 4 SPC
Art. 6 EHRC
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"Designation fees"
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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
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Art. 66, 67, 76, 79, 80, 90, 91, 112 EPC
R. 15, 25, 85a, 107, 108 EPC
Art. 4 Paris Convention
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"Reformatio in peius/3M"
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Reformatio in peius – exception to the prohibition – Status of appellant/opponent – Status of appellant/patent proprietor
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Art. 100, 101(1), 102(1)(2)(3), 106(1), 107, 108, 112(1)(a), 114(1), 123(2) (3), 125 EPC
R. 57a , 58(2), 64(b), 66(1), 87 EPC
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"Six–month period/DEWERT"
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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
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Art. 54(2)(3), 55(1)(a), 56, 89 and 112(1)(a) EPC
R. 23 EPC
Art. 17(2) RPBA
Art. 2, 4 Paris Convention
Art. 4 SPC
Art. 6 ECHR
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"Admissibility of joint opposition or joint appeal/HOWARD FLOREY"
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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
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Art. 58, 99, 99(1), 104, 107, 110(1), 112(1)(a), 133, 133(4), 134 EPC
R. 1, 26(2)(c), 36(3), 55, 55(a), 56(2), 60(2), 66(1), 100, 100(1) EPC
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"Formalities officers´ powers"
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Opposition divisions – formalities officers – decisions – powers
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Art. 10(2)(a), 10(2)(i), 15, 18(2), 19, 19(1), 19(2), 21, 21(3)(a), 21(3)(b), 21(3)(c), 21(4), 33(3), 90, 91, 91(3), 99(1), 102(5), 106, 112(1)(b), 164(2) EPC
R. 9, 9(3), 51(4), 55(c), 56(1), 56(2), 56(3), 57(1), 69(1), 69(2) EPC
Notice of the Vice-President Directorate-General 2 dated 28.4.1999, points 4 and 6
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"Priorities from India/ASTRAZENECA"
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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
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Art. 23(3), 33, 66, 87(1) and (5), 88, 112(1)(a), 150(2), 172 EPC
Art. 1 - 12, 4A(2), 19 Paris Convention
Art. 5, 26, 34, 38 Vienna Convention 1969
Art. 34, 35, 38 Vienna Convention 1986
Art. 1, 2 (1) TRIPS Agreement
Art. 38 Statute, International Court of Justice
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"Disclaimer/PPG"
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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
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Art. 52, 53, 54(2), (3) and (4), 56, 57, 60(2), 84, 87(1), 112(1), 123(2) and (3), 139(2) EPC
R. 27(1)(b), 29(1) EPC
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"Disclaimer/GENETIC SYSTEMS"
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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
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Art. 52, 53, 54(2), (3) and (4), 56, 57, 60(2), 84, 87(1), 112(1), 123(2) and (3), 139(2) EPC
R. 27(1)(b), 29(1) EPC
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"Reimbursement of the appeal fee/HIGHLAND"
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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
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Art. 21, 106, 107, 108, 109, 111(1) and 112(1) EPC
R. 67 EPC
Art. 11 Rfees
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"Diagnostic methods"
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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
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"Transfer of opposition/
HOFFMANN–LA ROCHE"
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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
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Art. 58, 99(1), 105, 107, 108, 112(1)(a), 114(2), 134 EPC
R. 20, 60(2), 61, 64(a), 65(2), 88, 101(1), (4) EPC
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"Intervention/EOS"
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Intervention in appeal proceedings – Continuation of proceedings after withdrawal of sole appeal – Payment of appeal fee
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Art. 99, 100, 105, 105(2), 107, 108, 112, 112(1)(a), 125 EPC
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"Exclusion and objection/XXX"
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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
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Art. 24(1), (2), (3), (4), 76(1), 105(1), 112(1)(a)
123(2) EPC
R. 66(2)(g) EPC
RPEBA Article 1(2)
RPBA Article 13, third sentence, 15
Business distribution scheme EBA 2006 Article 2(3)
ECHR Article 6(1)
Rules of Court ECHR Rule 28(2)(a)(d), (3)
Federal Constitution (AT) Article 87(3)
Federal Constitution (CH) Article 30(1)
Federal Constitution (DE) Article 101(1) 2
Jurisdiktionsnorm (AT) §20
Patentgesetz (AT) §76
Zivilprozessordnung (DE) §41
Codice di procedura civile (IT) Article 51
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"Divisional/ASTROPOWER"
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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 disclosure 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
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Art.: 54(3), 75(2), 76(1)(2)(3), 77(5), 82, 96(2), 97(1), 100(c), 102(3), 112(1)(a), 113(1), 123(1)(2)138(1)(c) and 138(2) EPC
Rule: 25(1)(2), 51(2), 86(3)(4) EPC
RPEBA Art. 8
UK Patents Act 1977: Sections 76(1), 130(7)
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"Sequences of divisionals/SEIKO"
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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
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Art. 54(3), 75(2), 76(1)(2)(3), 77(5), 82, 96(2), 97(1), 100(c), 102(3), 112(1)(a), 113(1), 123(1)(2)138(1)(c) and 138(2) EPC
R. 25(1)(2), 51(2), 86(3) (4) EPC
RPEBA Art. 8
UK Patents Act 1977: Sections 76(1), 130(7)
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Case number,
date,
publication
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Headword/Subject
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Article, Rule of the
EPC
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"Use of embryos/WARF"
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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
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Art. 53(a), 112(1)(a) EPC 1973
R. 23b, 23b(1), 23d, 23d(c), 23e EPC 1973
European Union:
Consolidated version of the Treaty establishing the European Community, in force since 1 February 2003 under the Treaty of Nice signed 26 February 2001: Article 234
Directive 98/44/EC of 6 July 1998: Article 6, 6(1), 6(2), 6(2)(c), Recital 42
TRIPS: Article 27, 27(2)
Germany:
Gesetz zum Schutz von Embryonen of 13 December 1990, § 8 UK:
Human Fertilisation and Embryology Act 1990, Section 1(1)
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"Treatment by surgery/MEDI-PHYSICS"
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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
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Art. 31, 32 Vienna Convention on the Law of Treaties
Art. 27.3(a) TRIPS
Directive 98/44/EC of the European Parliament and the Council of 6 July 1998 on the legal protection of biotechnological inventions:
Art. 6(2), Recital 35
Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC:
Art. 1
Act revising the Convention on the Grant of European Patents: Art. 3(1), 7(1)
Art. 2(2) Swiss PatG
§ 5(2) German PatG
Section 4(2) UK Patents Act 1977
Art. 52-57, 52(2), (3), (4), 53(b), 84, 112(1), 177(1) EPC 1973
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"Broccoli/PLANT BIOSCIENCE"
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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
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Art. 31(1), 32 Vienna Convention on the Law of Treaties
Art. 4G Paris Convention
Art. 2b Strasbourg Patent Convention
International Convention for the Protection of New Varieties of Plants (UPOV Convention)
European Union:
Art. 2(2), 7, recitals 17, 33 Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions
Transitional provisions:
Art. 1(1) Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC
Art. 2 Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the European Patent Convention 2000
Point 19, explanatory notes to Rule 23b(5) Notice dated 1 July 1999 concerning the amendment of the Implementing Regulations to the European Patent Convention
Art. 33(1)(b), 52, 52(4), 53(b), 76, 83, 164(2) EPC 1973
R. 23c(c), 23b(1), (5), 25(1), 28 EPC 1973
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"Tomatoes/STATE OF ISRAEL"
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Art. 31(1), 32 Vienna Convention on the Law of Treaties
Art. 4G Paris Convention
Art. 2b Strasbourg Patent Convention
International Convention for the Protection of New Varieties of Plants (UPOV Convention)
European Union:
Art. 2(2), 7, recitals 17, 33 Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions
Transitional provisions:
Art. 1(1) Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC
Art. 2 Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the European Patent Convention 2000
Point 19, explanatory notes to Rule 23b(5) Notice dated 1 July 1999 concerning the amendment of the Implementing Regulations to the European Patent Convention
Art. 33(1)(b), 52, 52(4), 53(b), 76, 83, 164(2) EPC 1973
R. 23c(c), 23b(1), (5), 25(1), 28 EPC 1973
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"Dosage regime/ABBOTT RESPIRATORY"
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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
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Objection to a member of the EBA, suspicion of partiality
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"Programs for computers"
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"Language of the proceedings/MERIAL"
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Language of the proceedings
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Pending application/SONY
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Pending application – Definition – Divisional application – Appeal period
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Art. 112(1) EPC
Vienna Convention on the Law of Treaties 1969, Art. 31, 32
§705 of the German Code of Civil
Procedure (Zivilprozessordnung)
§411 of the Austrian Code of Civil Procedure (Zivilprozessordnung)
Art. 500 of the French Code of Civil Procedure (Nouveau Code de Procédure Civile, NCPC)
Relevant legal provisions (EPC 1973):
Art. 60, 64(1), 67, 67(4), 71, 76,97(1), 97(4), 106, 108, 125, 150(2), 175(2), 175(3) EPC
R. 13(1), 13(3), 25(1), 29(2), 48(2), 51, 51(4) EPC
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"Disclaimer/SCRIPPS"
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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
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