Selected decisions
The list of “Selected decisions” alerts users to all newly published decisions for which a headnote or a catchword has been provided by the board. Usually, a board will add a headnote or catchword if it wishes to provide a brief summary of a particular point of law or to draw attention to an important part of the reasons for the decision. The list contains all decisions with a headnote or catchword published in the last three years and can be viewed by year by selecting the year from the menu on the left.
The list below contains all decisions with a headnote or catchword that have been released for publication in the last six months (newest first).
November 2022
Inventive step - all requests (no)
Inventive step - insurance risk predicition and loss frequency (not technical)
1. If a request is not admitted because earlier objections are not overcome, Rule 111(2) EPC requires that these earlier objections be made explicit in the decision (see reasons 3).
2. Non-convergence of requests is, on its own, not a sufficient reason for non-admittance. It must be reasoned that and why non-convergent requests affect procedural economy in view of the particular circumstances of the case (see reasons 4).
3. The purpose of the claims to define the matter for which protection is sought (Article 84 EPC) imparts requirements on the application as a whole, in addition to the express requirements that the claims be clear, concise and supported by the description. The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. Whether this is the case for a specific patent application (or an amended patent) can only be decided with due consideration of the description. Claims and description do not precisely define the matter for which protection is sought if they contradict each other (see reasons 27 to 34).
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Decision not to admit new main request insufficiently reasoned
Non-admittance decision, therefore, not confirmed
Inventive step - main request, first and second auxiliary requests (no)
Inventive step - third and fourth auxiliary requests (yes, claims on their own)
Consistency between claims and description of third and fourth auxiliary requests - no
Scope of protection sought defined precisely - no
Amendment after summons - exceptional circumstances (no)
Novelty - (main request: no; first auxiliary request: yes)
Inventive step - (first auxiliary request: yes)
Added subject-matter - (no, after amendment)
Support by the description - (yes, after amendment)
Adaptation of the description: objection of examining division not justified
Remittal - special reasons (yes): novelty and inventive step not decided yet
Inventive step - (yes)
Inventive step - problem and solution approach
Inventive step - after amendment
Inventive step - closest prior art
Inventive step - problem invention (yes)
Amendment after expiry of period in R. 100(2) EPC communication - exceptional circumstances (yes) - exercise of discretion - cogent reasons (yes)
October 2022
Late-filed evidence - admitted (no)
Late-filed request - admitted (no)
Inventive step - (no)
Inventive step - obvious modification
Inventive step - Unusual parameter and burden of proof
In the Board's judgement it is part of the non-technical requirement specification to keep keys (be it analog or electronic keys) away from people one does not trust. This does not require technical considerations of a technically skilled person. The Board does not consider this to be a technical difference, but to be an administrative consideration within the sphere of a business person when contemplating a secure tender process. It is not regarded as a technical innovation, but a natural choice for the bidders to use individual keys, keep the keys back as long as possible and furnish them as late as possible. And even if this was considered technical, it would, in the Board's view, be obvious to do so.
Furthermore, the Board considers that implementing a functionality in the networked e-tender system corresponding to D1 would be, at the claimed level of generality, obvious in view of the above business related requirement specification. The Board notes that the implementation is claimed in functional terms and neither the claim nor the application as a whole provide details on how encryption/decryption is achieved on a technical level. The application apparently relies in this respect on the skilled person's common general knowledge. The Board notes in this regard that if providing necessary software and data structures were beyond the skilled person's skills, the invention would not be sufficiently disclosed (Article 83 EPC).
Even if the appellant is correct that using different keys for different bidders is a difference over D1, this would in the Board's view imply - in the light of bidders creating their own individual keys for unlocking/decrypting being obvious - that the keys of different bidders are different, too. Therefore creating individual keys/pass-phrases would inherently require the use of multiple keys for implementation.
(See points 4.2 to 4.4 of the reasons)
Inventive step - mixture of technical and non-technical features
Inventive step - bidder created pass-phrases (no
Inventive step - not technical)
Inventive step - main request and auxiliary request I (no)
Auxiliary request II late filed during oral proceedings - not admitted
Admittance - objections raised in appeal which had been raised against a different claim request before the opposition division
Admittance - unsubstantiated objection (added subject-matter and novelty)
Sufficiency of disclosure
Inventive step
Correction of errors in decisions
Correction of error - grant decision
Inventive step - (no)
Inventive step - mixture of technical and non-technical features
Inventive step - notional business person versus real business person versus technically skilled person